How U.S. Attorneys Should Tackle Extended European Search Reports

Why should a US attorney bother to learn European Patent (EP) practice? Whether you are already a multinational or have clients looking to expand across borders, Our clients sometimes ask us about IP portfolio management in other countries. It is not uncommon for clients to ask about practice at the European Patent Office (EPO) and either Asian or Latin American patent offices. The reason is English. you speak it They speak it too. Therefore, clients may ask you to check documents from Europe to save money (if they haven’t already). For this reason, it is important to know some basics of European prosecution practice. In this episode of IP Practice Vlogs, let’s talk about the Extended European Research Report (EESR). This basically means an EP office action.

Read EESR

Once you receive your EESR, you should one last look and see which claims have been rejected in light of the prior art and see if there is permissible subject matter. All EESRs contain a chart after the substantive comments, listing all citation references corresponding to the claims to which the reference applies. References marked with an ‘X’ are meant to be alone relevant. This means that it is used as a leading reference. A reference marked “Y” means a reference that is related when combined with another document.

In the example below, claims 1 and 4-6 are expected from the first reference. Claims 1 and 4-6 are also rejected as anticipated by the third reference. Claim 2 is rejected as obvious in light of the second reference and is very likely obvious to the second combination in light of the first reference. Claim 2 is also rejected as obvious in light of the fourth reference. This chart gives you a good idea of ​​where your claims are and which references you should pay attention to.

two-part form

European examiners often ask applicants to amend their independent claims to this so-called two-part form. This is a formal problem that is basically irreversible.

The first part of the two-part form is the preamble, which must be a “subject matter designation”, i.e. a statement indicating the general technical class of equipment, process, etc. to which the invention pertains. ”.

The second part of the two-part claim is the “feature part,” which is a statement of “the features the invention adds over the prior art.”

It is in the applicant’s interest not to include the environmental structure in Part 2. Because this section should contain only what is necessary for novelty. If we mistakenly included too many environmental structures to give breadth to the point of novelty, we would have set a very low ceiling, since it could not be wider than the original presentation of the claim. , it seems that even the first part does not claim the environmental structure.

So what happens when you have an environmental structure? To give breadth and brightness to your claims, whether you’re talking about a mechanical claim or a software claim, you need to claim an environmental structure. There is often Let’s say you have a mechanical claim claiming a new transmission, but the point of novelty is how it’s secured to the engine compartment. You have to argue the traditional parts of the transmission and the traditional parts of the vehicle to figure out how the parts interact with each other and capture the point of novelty.

When entering Europe on the basis of a US application or vice versa, clients should be advised to rewrite their claims upon entry into a different country to better prepare for foreign examination. That is, if a client uses a US application to advance to Europe, the claims can be amended to separate the environmental features from the characterizing portion so as not to unduly restrict the scope of novelty.

Is two parts a good idea in the US?

Wouldn’t it be interesting if this two-part form practice was implemented in the US? Now everyone can interpret what the invention is intended for and no one listens to the applicant.I’m talking about step 2A of Alice This is a “pointed” prong. If you got a very crappy “directed” decision in step 2A, congratulations! Directed to abstract ideas.

The two-part form request practice may work very well in the current US system. Alice Until Congress decides something, we must accept this framework because applicants can define the subject matter of their invention. In return, the applicant acknowledges what is required for novelty. Because the USPTO has no real rule-making authority and must rely on the USPTO, the practice of making this type of claim is not testing our integration testing (where the software is integrated with a real machine or product). I think it works better than ? We develop our guidelines with case-specific and inconsistently applied case law-based theory.

Claims beyond the scope of the original disclosure

This type of rejection is more common in EESR than in US Office Actions because of the way the EPO interprets claims. Check out the example video where I talk about my own experience.

Practice Tip. If you write an application that writes a method, don’t write the method as “a method consists of steps A, B, and C.”

Instead, try stating, “The method includes step A. The method may also include step B. The method may include step C.”

Regarding the device claim – “The device contains gears. The device can also have another gear.

In addition to this, it describes how to include all of the sequence of steps A, B, C, or a specific sequence of steps. Also, the device may comprise any one or more of the first, second and third gears, together or in other combinations. In this way, the features of the invention are described both broadly and narrowly to fully support various claim scopes.

Response to EESR

Applicant may submit amended claims as part of a main request that includes one or more auxiliary requests. These are all distinct sets of proposed allegations that will be considered individually but submitted in a single response. If the main request is not successfully amended, the examiner should consider amending the auxiliary request. This is like adding a new claim for the examiner’s consideration. But adding new charges means more fees at some point. Therefore, Auxiliary Requests are not the same as adding new claims. That is, dressing up the same set of claims in a different way.

unitary patent court

In the Unified Patent Court (UPC), decisions of a single court apply directly to member states that have ratified the UPC Agreement. Initially, the UPC said he would begin hearings in March 2023, at which point Germany planned to ratify the agreement. However, due to technical issues, that date has been postponed to June 2023. This makes his three months prior to June 2023 the new Sunrise period for opting out. If a client wishes to opt out of her UPC, they should start preparing inventorship and assignment paperwork. I mean, you have to worry about all that right now.

Happy new year! Watch the full episode here.